Is it time to repair the DMCA? — That’s the question posed by Jonathan Bailey, who notes, as does a recent Trichordist piece, how far from the original intent of the 1998 law we’ve come. Bailey suggests five ways to repair the DMCA: 1) Improve transparency, 2) Reward sites that are proactive, 3) Punish sites that do less, 4) Get more serious about bad takedown notices, and 5) Streamline the sending and processing of notices.

Digitalmusic.org launches music API directory — Digitalmusic.org, the digital wing of the National Association of Recording Merchandisers, recently launched an API directory as part of its suite of developer services that “was created to help address the issue of connecting developers with the quality content providers and services that can be the building blocks of their business.” The organization has been hard at work helping aspiring entrepreneurs build successful digital music-related services; this October it is also hosting an Entertainment Startup Academy in Washington, D.C

How much do artists make on YouTube — Over at Vox Indie, Ellen Seidler, points to a recent NPR story examining how much the video site compensates musicians. Notes Seidler, “Bottom line, musicians and filmmakers whose work is routinely uploaded to YouTube without permission can make some money from it. Time for Google to tell us exactly how much they are making. Anything less than full transparency is unacceptable.”

Justin Timberlake, Myspace owners discuss new relaunch — The internet was abuzz earlier this week after Myspace teased a completely new look and site in a video. Here, the site’s owners, including investor Timberlake, discuss the reboot of the once popular social networking site. While many are wondering whether a new UI and features will save the site, it should be noted that Myspace has already been quietly rebuilding; back in February, it announced that it was adding around 40,000 new users a day

The Tech World Gets a New Trade Association, Or “How to Read a DC Press Release” — With the official launch of the Internet Association this week, Bytegeist’s Jane Hamsher takes a closer look at the official announcement. Hamsher notes, “Nobody asked the rather obvious question: why an industry that spent $129 million on lobbying in 2011 needs yet another lobbing shop, especially when the Net Coalition already exists.”

Kickstarter Will Not Save Artists From the Entertainment Industry’s Shackles — A provocative article from Evgeny Morozov that looks at a recent academic study about the effect the fundraising site has had on the culture industry, particularly documentary filmmaking. According to the study’s author, campaign and issue-driven films are more likely to find success through this method of funding than other types of films, while films that involve significant legal risks (“an undercover investigation of the oil industry”, to use Morozov’s example) are less likely to be made through crowdfunding.

Maybe the Internet only wants one of everything — “How many search engines are there? For most of us, there’s only one — and it makes major news headlines even for putting a cute design on its logo. How many general-purpose social networks do you use? Probably just one — or maybe you use them both, because technically, they actually do different things. Where do you crowdfund something? Duh. Where do you buy physical and now many digital objects? Mostly from here.”

Launched in February 2012, Aereo is a service that retransmits broadcast TV over the internet, for a monthly fee, and without permission from copyright holders. It was quickly sued by several broadcasters, who sought to enjoin the service during court proceedings. However, the district court denied the injunction, noting that the broadcasters had not sufficiently distinguished Aereo from the Second Circuit’s 2008 “Cablevision” decision. 1Cartoon Network LP v. CSC Holdings, 536 F.3d 121 (2nd Cir. 2008). The court strongly suggested that, but for Cablevision, the preliminary injunction would have been granted. The broadcasters appealed this decision.

The broadcasters’ appellate brief has recently been filed, as well as the amici briefs in support of plaintiff (opposing briefs are due later this year). William Ruiz at the Copyright Alliance has a roundup and links to several of these briefs, which include briefs filed by ASCAP and other copyright member organizations, professional sports organizations, former US Register of Copyrights Ralph Oman, and, somewhat surprisingly, Cablevision itself.

But despite the complex and confusing issues at play here, I believe the question on appeal is actually easily answered. To see why, let’s take a closer look at public performances, the Cablevision case, the Aereo system, and, finally, the “missing link” that distinguishes Aereo from Cablevision.

Public Performance

The US Copyright Act gives copyright owners the exclusive right “to perform the copyrighted work publicly.” 217 USC § 106(4). The nature of this right is admittedly confusing.

It helps to visualize a performance as a chain, with each link in the chain a separate and discrete performance. When a television station broadcasts a show, it is performing the work. When a cable provider retransmits that broadcast to subscribers, it is also performing the work. And when a viewer turns on her TV to watch the show, she is also performing the work. The relevant question, for copyright purposes, is whether a particular performance is public — the right to privately perform a work is not exclusive to the copyright holder.

The Copyright Act defines public in this context not only in the traditional sense of a place open to the general public but also as a transmission “by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.” This means that a performance by a television or radio station is public even if every single reception of that broadcast takes place in the privacy of the viewers’ homes. And by extension, as the Second Circuit held in National Football League v PrimeTime 24 Joint Venture, 3211 F.3d 10 (2000). “each step in the process by which a protected work wends its way to its audience” — each link in this specific performance chain that results in a public performance — is itself a public performance.

So in our example, the broadcaster’s initial performance is a public one, and the cable service’s retransmission of the performance is a separate public performance. The television viewer’s performance, however, is a private one, since that particular performance has already wended its way to the public and is now occurring in a private setting.

Cablevision and the VCR Analogy

Cablevision involved a new service from cable provider Cablevision that allowed remote DVR functions (“RS-DVR”) for subscribers. Like a set-top DVR, viewers could program the recording of shows for later viewing, except in this case, the DVR’s were housed remotely at Cablevision’s own facilities. Broadcasters and TV and film producers sued Cablevision, claiming that Cablevision infringed their copyrights twice, by first copying their works onto the RS-DVR and then publicly performing the work when a subscriber played the recorded show from the RS-DVR.

The Second Circuit disagreed. As far as Cablevision’s liability for copying, the court analogized the RS-DVR to an ordinary VCR. Just as Cablevision wouldn’t be directly liable if a viewer decided to record a show at home, it wouldn’t be liable if the viewer recorded a show on a remote device. Even though the remote device is housed within Cablevision’s system, said the court, it is still the viewer’s “volitional conduct” that causes the reproduction. 4The court did note that Cablevision might face secondary liability in this situation, but this theory was “expressly disavowed by plaintiffs” in this particular case.” Cartoon Network at 130.

The court also held that Cablevision was not separately liable for the performance that results when a show is played from the RS-DVR by a viewer. Plaintiffs argued that Cablevision’s transmission of shows from the RS-DVR was indistinguishable from its transmission of live shows to subscribers. Since the latter is a public performance, so too is the former. Things get tricky here, but ultimately, the decision relied on a distinction between the transmission of a particular performance of a work and the transmission of the underlying work to draw the line between a public and a private performance.

The district court, in deciding whether the RS-DVR playback of a program to a particular customer is “to the public,” apparently considered all of Cablevision’s customers who subscribe to the channel airing that program and all of Cablevision’s RS-DVR subscribers who request a copy of that program. Thus, it concluded that the RS-DVR playbacks constituted public performances because “Cablevision would transmit the same program to members of the public, who may receive the performance at different times, depending on whether they view the program in real time or at a later time as an RS-DVR playback.” In essence, the district court suggested that, in considering whether a transmission is “to the public,” we consider not the potential audience of a particular transmission, but the potential audience of the underlying work (i.e., “the program”) whose content is being transmitted.

We cannot reconcile the district court’s approach with the language of the transmit clause. That clause speaks of people capable of receiving a particular “transmission” or “performance,” and not of the potential audience of a particular “work.” Indeed, such an approach would render the “to the public” language surplusage. Doubtless the potential audience for every copyrighted audiovisual work is the general public. As a result, any transmission of the content of a copyrighted work would constitute a public performance under the district court’s interpretation. But the transmit clause obviously contemplates the existence of non-public transmissions; if it did not, Congress would have stopped drafting that clause after “performance.”

Aereo’s Service

Aereo argued in front of the lower court that its service is similar to Cablevision’s. The individual copies of broadcast signals are made at the volition of users, so Aereo is not directly liable for reproduction. And since the performance that results when a user watches the video originates from a unique copy, it is not a public performance. The district court held that since plaintiffs could not distinguish Aereo from Cablevision, they had not demonstrated a likelihood of success on the merits.

A note on Aereo’s thousands of tiny antennas. Both Aereo and the district court emphasized the fact that Aereo used thousands of tiny antennas instead of one big antenna to capture television signals, but I don’t believe this is ultimately important. As explained above, Cablevision distinguished between a particular transmission and a particular work. It didn’t distinguish between a transmission of a particular work and a particular transmission of a particular work. In other words, it was silent on whether a public performance can become a private performance if you manage to “divide” one transmission of a particular work into separate, unique transmissions of that particular work, as Aereo claims its thousands of tiny antennas does.

I don’t think you can; the language of the Copyright Act doesn’t contemplate this view and there is no case law that supports it. Whether Aereo uses one big antenna or thousands of tiny antennas, it is still retransmitting the same transmission of a particular work — the particular transmission of a work that originates from the broadcasting station. A transmission is indivisible. The same logic used by Aereo and the district court would seem to support the view that a restaurant which is engaged in a public performance by playing music for its patrons could escape liability by adding speakers until there is a 1:1 ratio of speakers to patrons, thereby “dividing” the transmission into multiple private performances. Clearly, this is not the case.

So we’re left with the distinction between Aereo and Cablevision.

The Missing Link

That distinction relies on what I’ll call the “missing link” in the performance chain.

The Cablevision court didn’t address this “missing link”, nor did the district court in Aereo. The “missing link” is the transmission of a program by Cablevision to its RS-DVR service, which is itself a separate public performance. It does not matter that this particular performance was to a bunch of recording devices. What does matter is that Cablevision is licensed to retransmit this performance, by virtue of its license to retransmit broadcasts to its subscribers in general — think of the DVR’s as simply additional subscribers. Aereo is not licensed to retransmit the broadcasters’ performance to its devices that make copies for its users — regardless of whether, as in Cablevision, a court determines that those copies themselves are made by Aereo’s users rather than Aereo.

To go back to the VCR analogy, a cable service is publicly performing a work and needs a license to retransmit the broadcast to its customers. The cable service is not liable if a TV viewer records an on-air program to her VCR. And if the user later plays back that recording, she — not the cable service — is “performing” the work, which, in her own home, would be a private performance. Aereo is like the cable service here. Even if the service is in all other respects similar to this VCR analogy, Aereo would still need a license to publicly perform the work that users copy and privately perform. And, as explained above, thousands of tiny antennas does not negate the need for that license.

The plaintiffs here do call attention to this “missing link” in their brief:

The direct capture of a broadcast by Aereo’s antennas and the retransmissions of the signal from those antennas to servers that make multiple subscriber-associated copies is itself an infringing performance to the public. That Aereo then sends the broadcast programming along to its subscribers by routing it through subscriber-associated digital copies does not transform those retransmissions into a private performance. That last step is simply another link in the chain of steps by which Appellants’ copyrighted programs are retransmitted to the public.

In my opinion, this is the key argument. Aereo does not have a license to retransmit the broadcasters’ performance in the first instance, so it is irrelevant what it does afterwards with that unauthorized public performance or how closely its system resembles Cablevision’s. This makes it a straightforward legal question that easily supports a preliminary injunction. The district court erred when it held otherwise, and the Second Circuit should reverse.

That’s one of the questions raised by a legal dispute currently headed toward trial between Capitol Records and ReDigi.

ReDigi is an online service founded in October 2011 that claims to provide a marketplace for secondhand digital music files. The site has since raised over $1 million in venture financing and announced plans to expand its service to used e-books.

The biggest obstacle to re-selling digital works online is that they are independent of any material object. Unlike with physical objects, any transfer of a digital work would seem to necessarily require that the work is copied, since transmission doesn’t result in actual physical transfer of bits over a network. And the exclusive right to copy a work is, after all, one of the core rights of copyright.

ReDigi believes it has found a way to overcome this obstacle. The company has built a “forward-and-delete” mechanism into its service that is designed to ensure that any file uploaded for resale is deleted from the user’s computer. Whether or not this is enough remains in the hands of the Southern District Court of New York.

The First Sale Doctrine and Digital Works

The first sale doctrine was first recognized in 1908 by the Supreme Court in Bobbs-Merrill v Straus. 1210 US 339. There, a book publisher had printed the following notice in its books: “The price of this book at retail is one dollar net. No dealer is licensed to sell it at a less price, and a sale at a less price will be treated as an infringement of the copyright.” The publisher brought suit against a wholesale dealer who was selling copies of the book for 89 cents. The Court rejected the publisher’s copyright claim, stating:

In our view the copyright statutes, while protecting the owner of the copyright in his right to multiply and sell his production, do not create the right to impose, by notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future purchasers, with whom there is no privity of contract.

The US Copyright Act of 1909 incorporated this first sale doctrine into statute, and it has remained a permanent fixture of copyright law since. 2Currently codified in 17 USC § 109(a). It has, however, become subject to several limitations. The Record Rental Amendment of 1984 prohibits for-profit rental, lease, or lending of phonorecords, 3Pub. L. No. 98-450, 98 Stat. 1727 (Oct. 4, 1984), amending 17 U.S.C. §§109, 115. while the Computer Software Rental Amendments Act of 1990 did the same for computer software (though the limitation doesn’t apply to console games). 4Tit. VIII of the Judicial Improvements Act of 1990, Pub. L. No. 101-650, 104 Stat. 5089, 5134 (Dec. 1, 1990), codified at 17 U.S.C. §109. A 1983 bill to create a similar exception for videotapes failed to pass after opposition from the video rental industry and consumer groups. 5Consumer Video Sales-Rental Amendment, H.R. 1029, 98th Cong. (1983). These limitations were added because of concerns over the ease of making near-perfect duplicates. 6Report of the Working Group on Intellectual Property Rights, National Information Infrastructure (1995).

Digital goods raise particular challenges to the scope of the first sale doctrine, as explained by the National Information Infrastructure’s Working Group on Intellectual Property Rights:

If the owner of a particular copy transmits a copy to another person without authorization (either from the copyright owner or the law), such a transmission would involve an unlawful reproduction of a work, and the first sale doctrine would not shield the transmitter from liability for the reproduction nor for the distribution. Under the first sale doctrine, the owner of a particular copy of a copyrighted work may distribute it, but may not reproduce it. Therefore, the transmission would constitute infringement of the copyright owner’s reproduction right. If the reproduction is unlawful, further distribution of the unlawful reproduction would not be allowed under the first sale doctrine because the copy distributed would not be one “lawfully made” under the Copyright Act, as required by the statute.

Congress has at times considered the application of the first sale doctrine to digital goods. In 2001, the US Copyright Office recommended against expanding the doctrine to explicitly include works in digital form:

Proponents of expansion of the scope of section 109 to include the transmission and deletion of a digital file argue that this activity is essentially identical to the transfer of a physical copy and that the similarities outweigh the differences. While it is true that there are similarities, we find the analogy to the physical world to be flawed and unconvincing.

Physical copies degrade with time and use; digital information does not. Works in digital format can be reproduced flawlessly, and disseminated to nearly any point on the globe instantly and at negligible cost. Digital transmissions can adversely effect the market for the original to a much greater degree than transfers of physical copies. Additionally, unless a “forward-and-delete” technology is employed to automatically delete the sender’s copy, the deletion of a work requires an additional affirmative act on the part of the sender subsequent to the transmission. This act is difficult to prove or disprove, as is a person’s claim to have transmitted only a single copy, thereby raising complex evidentiary concerns. There were conflicting views on whether effective forward and delete technologies exist today. Even if they do, it is not clear that the market will bear the cost of an expensive technological measure.

The underlying policy of the first sale doctrine as adopted by the courts was to give effect to the common law rule against restraints on the alienation of tangible property. The tangible nature of a copy is a defining element of the first sale doctrine and critical to its rationale. The digital transmission of a work does not implicate the alienability of a physical artifact. When a work is transmitted, the sender is exercising control over the intangible work through its reproduction rather than common law dominion over an item of tangible personal property. Unlike the physical distribution of digital works on a tangible medium, such as a floppy disk, the transmission of works interferes with the copyright owner’s control over the intangible work and the exclusive right of reproduction. The benefits to further expansion simply do not outweigh the likelihood of increased harm.

Digital communications technology enables authors and publishers to develop new business models, with a more flexible array of products that can be tailored and priced to meet the needs of different consumers. We are concerned that these proposals for a digital first sale doctrine endeavor to fit the exploitation of works online into a distribution model – the sale of copies – that was developed within the confines of pre-digital technology. If the sale model is to continue as the dominant method of distribution, it should be the choice of the market, not due to legislative fiat. 7Statement of Marybeth Peters, The Register of Copyrights, before the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, United States House of Representatives, 107th Congress, 1st Session, December 12-13, 2001.

Preliminary Injunction Denied

Capitol Records filed suit against ReDigi on January 6, 2012. It alleged copyright infringement, inducement of infringement, contributory copyright infringement, vicarious infringement, and common law copyright infringement of Capitol’s reproduction and distribution rights. 8Capitol also alleges violation of its public performance rights since ReDigi allows a user to stream tracks from her Cloud Locker and violation of its public display rights for presenting associated artwork of songs through its service. Capitol sought a preliminary injunction shortly afterward. 9Google sought to intervene as amicus, but was denied by the court.

The district court denied the motion on February 6th. It noted that the balance of equities was “kind of a push”; both parties had a near-equal interest in the outcome of the motion. The public interest was similarly a tie, as there is both a legitimate interest in seeing copyright enforced and in secondary markets. Notably, the court did find that Capitol had shown a likelihood of success on the merits. What doomed the motion was, in the court’s opinion, a lack of irreparable harm — it concluded that money damages would be adequate for Capitol if it ultimately wins.

Both parties have moved for summary judgment.

The Arguments

In its opening legal brief, ReDigi primarily makes two arguments: first, that, although its system makes a copy, this is not a “reproduction” within the meaning of the US Copyright Act; and second, the first sale doctrine protects its service to the extent that there is any distribution of copyrighted works.

As far as the first argument goes, ReDigi claims that “to the extent any discrete acts by users on the ReDigi system even implicate any of Capitol’s exclusive rights, those acts are not infringements by virtue of statutory and/or equitable, policy based limitations on Capitol’s exclusive rights.” It argues that its process does not result in a reproduction by definition, saying “the mere fact that a copyrighted ‘copy’ or ‘phonorecord’ existed in one place and later existed in another does not constitute proof of a ‘reproduction’ or duplication.”

As to the second argument, ReDigi looks to the language of the Copyright Act and points out that both §106, which codifies the distribution right, and §109, where the first sale doctrine is located, refer to “phonorecords”. ReDigi argues that this requires both sections to be read consistently: either a digital song file is not a “phonorecord,” so ReDigi is not violating Capitol’s exclusive distribution right through its service, or it is a “phonorecord”, in which case, reading the Copyright Act consistently, the first sale doctrine applies.

In response, Capitol argues that ReDigi’s view of “reproduction” is novel and unsupported by any case or precedent. It specifically notes that ReDigi’s process involves deletion of music files from a user’s computer after they are uploaded to its servers. Capitol states that “this act of deletion presupposes the creation of a different copy on the ReDigi server; otherwise, there would be nothing to delete in the first place.”

Capitol also disputes ReDigi’s reading of the first sale doctrine. It agrees that both the distribution right and the first sale doctrine, as codified in the Copyright Act, refer to “phonorecords”, but it points to a critical distinction in the language. “While section 106(3) reserves to the copyright owner the exclusive right to ‘distribute … phonorecords of the copyrighted work,’ section 109(a) only provides a defense when the owner of a ‘particular … phonorecord lawfully made … dispose[s] of the possession of that … phonorecord.'”

In its reply, ReDigi adds that, relying on the Second Circuit’s Cartoon Network opinion, if there is any copying that occurs through its system, it is a result of the user’s volitional conduct, not ReDigi’s.

Oral arguments for the summary judgment motions are scheduled for October 5th. Although the issue of the first sale doctrine is a novel one, the court has ample opportunity to resolve this case without broaching that issue.

Statement of Marybeth Peters, The Register of Copyrights, before the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, United States House of Representatives, 107th Congress, 1st Session, December 12-13, 2001.

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Capitol also alleges violation of its public performance rights since ReDigi allows a user to stream tracks from her Cloud Locker and violation of its public display rights for presenting associated artwork of songs through its service.

The objection to the rights of literary property … proceeds, it should be observed, not upon fact but upon vague and unwarranted suspicion. It says, in effect, “We dare not trust you with your rights, because we suspect that you would make an ill use of them.” Why should this be suspected? No good reason can be assigned why the descendants of literary men should be less honest or less liberal than other persons. Surely, then, the objection is of a most ungracious character.

Copyright doesn’t limit online speech — IP scholar Adam Mossoff makes the case why copyright is not censorship. “The right to free speech is the right to express one’s thoughts without censorship by the government. Copyright does not prohibit anyone from creating their own original novels, songs or artworks. Importantly, copyright does not stop people from thinking, talking or writing about copyrighted works.”

Our forgotten Constitutional right — intellectual property protection — Marking the 225th anniversary of the drafting of the US Constitution this week, Colin Hanna reflects on the protection of creator’s rights in the foundational document. “The focus of any discussion of Constitutional rights usually focuses on the limitations placed upon its power by one of the first ten amendments to the Constitution, known collectively as ‘The Bill of Rights.’ There are, however, other specifically enumerated rights laid out in the main body of the Constitution that sometimes go unnoticed. One of those is the protection of copyrights and patents, or what we now call ‘intellectual property.'”

Visions of a Blind Photographer — A fascinating look at the work of Sonia Soberats, a 77 year-old woman who took up photography after losing her eyesight to glaucoma. As Soberats says, “It surprised me that the human mind can do whatever it wants if we work toward it.”

Last week, Seattle-based photographer Christopher Boffoli sued Twitter in the U.S. District Court for the Western District of Washington for contributory copyright infringement. Boffoli is well-known for his “Disparity Series,” which according to the complaint is “a series of art photographs featuring miniature figures in whimsical poses on fruit.” Seattle Magazine has a brief article about the series. Boffoli’s case was also a topic of discussion on the most recent episode of “This Week in Law” (where Terry Hart was a guest).

In the complaint, Boffoli alleges that Twitter users uploaded several of his copyrighted photographs without license or permission and then linked to them in various tweets. Some images were hosted on Twitter’s own servers, while others were hosted on servers operated by third-parties. Boffoli claims that even though he sent four DMCA takedown notices to Twitter’s registered agent for receiving such notices, none of the hosted links or images were removed.

As such, Boffoli alleges that Twitter is liable for willful contributory infringement because (1) it had actual knowledge of infringement provided by his DMCA takedown notices, and (2) it materially contributed to the underlying infringements by Twitter’s users.

Ars Technica and Techdirt ran articles about the lawsuit last week. Both pointed out that Twitter’s failure to respond to the DMCA takedown notices doesn’t necessarily mean that the service provider is liable for infringement. That much is true, but it was also suggested in both articles that Twitter wasn’t likely to be liable for infringement despite its failure to remove the links and images complained of. It’s that notion that I’ll examine more closely.

DMCA Notice-and-Takedown

The DMCA1Digital Millennium Copyright Act, Pub.L. No. 105-304, 112 Stat. 2860 (1998) (codified as amended in scattered sections of 17 U.S.C. and at 28 U.S.C. § 4001). notice-and-takedown provisions are no doubt familiar. Title II of the DMCA, titled the “Online Copyright Infringement Liability Limitation Act,” created Section 512217 U.S.C.A. § 512 (West 2012); Section 512 codified the principles developed by the district court in Religious Tech. Ctr. v. Netcom On-Line Commc’n Services, Inc., 907 F.Supp. 1361 (N.D. Cal. 1995). of the Copyright Act—what people often are referring to when they talk about the “DMCA,” even though it’s only one part. It’s here that the notice-and-takedown provisions are found. The idea is simple: A copyright owner who finds infringing material on a service provider’s system sends notice to the service provider who then takes it down.

The “DMCA did not simply rewrite copyright law for the on-line world,” but rather, “it crafted a number of safe harbors which insulate ISPs from most liability should they be accused of violating traditional copyright law.” 3Ellison v. Robertson, 189 F.Supp.2d 1051, 1061 (C.D. Cal. 2002). The DMCA uses a classic carrot-and-stick approach to get service providers to play along. The carrot of limited liability within the safe harbors is enforced by the stick of full liability without. This “preserves strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital networked environment.” 4H.R. Conf. Rep. 105-796, 72 (1998).

When a third-party user stores material on a service provider’s system, the provider’s potential copyright liability is greatly reduced if it “responds expeditiously to remove, or disable access to,” the material upon notice that it “is claimed to be infringing or to be the subject of infringing activity.” 5See 17 U.S.C.A. § 512(c)(1)(C) (West 2012) (“A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider– *** upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.”). Thus, to moor in the safe harbors, a service provider must quickly take down allegedly infringing material when notified. Once in the safe harbors, a service provider is only potentially liable for limited injunctive relief—it’s not potentially liable for monetary relief as it would be otherwise.

A common misperception is in thinking that a service provider that qualifies for the safe harbors cannot be liable for infringement. The DMCA itself is irrelevant to determining whether the service provider is an infringer. The safe harbors limit liability, but they “do not affect the question of ultimate liability under the various doctrines of direct, vicarious, and contributory” infringement. 6Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.Supp.2d 1146, 1174 (C.D. Cal. 2002). After it’s determined that a service provider is an infringer in the first place, the safe harbors can be used to assess the extent of the liability. Although as a practical matter, courts usually start with the analysis of the safe harbors first. 7See, e.g., Costar Group Inc. v. Loopnet, Inc., 164 F.Supp.2d 688, 699 (D. Md. 2001) (“The existence of the safe harbor convolutes the analysis of copyright infringement which, theoretically, should proceed in a straight line. Ideally, CoStar would have to make a prima facie showing that LoopNet was liable of contributory infringement and then the court would turn to the question of whether the “safe harbor” provided a defense. However, because the parameters of the liability protection provided by the “safe harbor” are not contiguous with the bounds of liability for contributory infringement, the analysis may proceed more efficiently if issues are decided a bit out of order. On summary judgment, it is often appropriate for a court to decide issues out of the traditional order because a dispute of fact is only material if it can affect the outcome of a proceeding. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Thus, to the extent, if at all, that LoopNet is entitled to summary judgment in its safe harbor defense, all other issues concerning damages liability for contributory infringement would be rendered immaterial.”).

Nor does the fact that a service provider fails to qualify for the safe harbors necessarily mean that it is liable for infringement. Such a service provider “is still entitled to all other arguments under the law—whether by way of an affirmative defense or through an argument that conduct simply does not constitute a prima facie case of infringement under the Copyright Act.” 8CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 552 (4th Cir. 2004). This make sense because the material complained of may not even be infringing or the service provider may qualify for some defense. Just because its liability isn’t limited by the safe harbors, it doesn’t mean that the service provider is liable in the first place.

Immunity under the safe harbors is not presumptive, and it’s only granted to service providers who do not have knowledge, either actual or constructive, of infringement. The “DMCA’s protection of an innocent service provider disappears at the moment the service provider loses its innocence, i.e., at the moment it becomes aware that a third party is using its system to infringe.” 9ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619, 625 (4th Cir. 2001). One common way to alert a service provider of infringement is via a takedown notice, which is effective only if it “includes substantially” certain elements listed in the statute. 1017 U.S.C.A. § 512(c)(3)(A) (West 2012) (“To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”).

Contributory Infringement

With “roots in the tort-law concepts of enterprise liability and imputed intent,” contributory infringement is a type of secondary copyright liability. 11Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 795 (9th Cir. 2007). It follows from the common law doctrine that “one who knowingly participates in or furthers a tortious act is jointly and severally liable with the prime tortfeasor,” a concept that applies in copyright law as it does in numerous other areas of the law. 121 Niel Boorstyn, Boorstyn On Copyright § 10.06[2], at 10-21 (1994). Put simply, contributory infringement is the idea that a person who contributes to the infringement of another is held liable for the infringement they helped to bring about.

The courts have formulated different tests for contributory infringement, but they all share the same basic elements. The test in the Ninth Circuit, where Boffoli filed his suit against Twitter, is simple: “one contributorily infringes when he (1) has knowledge of another’s infringement and (2) either (a) materially contributes to or (b) induces that infringement.” 13Perfect 10, 494 F.3d at 795; it should be noted too that contributory infringement requires direct infringement to have occurred before liability attaches; see 1 Goldstein, Copyright: Principles, Law and Practice § 6.1, at 705 (1989) (“It is definitional that, for a defendant to be held contributorily . . . liable, a direct infringement must have occurred.”). Inducement infringement, identified by the Supreme Court in the Grokster opinion, 14Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (the Court held that “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”). is not at issue here. Boffoli is claiming traditional contributory infringement, which has two elements: (1) knowledge, and (2) material contribution.

As to the knowledge element, contributory infringement “requires that the secondary infringer know or have reason to know of direct infringement.” 15A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1020 (9th Cir. 2001). In other words, either actual or constructive knowledge will suffice. It’s not enough that a service provider merely supplies the means of accomplishing infringement. 16See, e.g., Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 436 (1984). Instead, there must be knowledge of “specific information which identifies infringing activity” before liability attaches. 17Napster, 239 F.3d at 1021. This makes sense because without specific knowledge, a service provider wouldn’t know what items to remove to avoid liability.

The relationship between knowledge and intent should also be noted. An explicit finding of intent is not “necessary to support liability for contributory copyright infringement.” 18Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 943 (9th Cir. 2011). Under the “rules of fault-based liability derived from the common law,” 19Grokster, 545 U.S. at 934-35. the “intention to cause the natural and probable consequences” of one’s conduct may be imputed. 20DeVoto v. Pac. Fid. Life Ins. Co., 618 F.2d 1340, 1347 (9th Cir. 1980); see also Restatement (Second) of Torts § 8A (1965) (“All consequences which the actor desires to bring about are intended, as the word is used in this Restatement. Intent is not, however, limited to consequences which are desired. If the actor knows that the consequences are certain, or substantially certain, to result from his act, and still goes ahead, he is treated by the law as if he had in fact desired to produce the result.”). It’s not mandatory to find that a service provider actually intended to contribute to the underlying infringement. Instead, a “knowing failure to prevent infringing actions” can be the basis for imposing contributory liability. 21Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007).

Generally speaking, the material contribution element “turns on whether the activity in question substantially assists direct infringement.” 22Louis Vuitton, 658 F.3d at 943 (internal quotations omitted). In the internet context, the Ninth Circuit last year held that there “is no question that providing direct infringers with server space satisfies” this standard because it is “an essential step in the infringement process.” 23Id. (internal quotations omitted). The alleged material contribution must have a direct connection to the infringement such that it assists or enables internet users to locate infringing content. 24Perfect 10, 494 F.3d at 797.

In the famous Napster case, the Ninth Circuit held that “if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement.” 25Napster, 239 F.3d at 1021. The appellate court concluded that “Napster materially contributes to the infringing activity,” since without its help, “Napster users could not find and download the music they want” as easily. 26Id. at 1022. To impose contributory liability, it was enough that “Napster provides the site and facilities for direct infringement.” 27Id.

Similarly, the Ninth Circuit in Perfect 10 stated that “a computer system operator can be held contributorily liable if it has actual knowledge that specific infringing material is available using its system and can take simple measures to prevent further damage to copyrighted works yet continues to provide access to infringing works.” 28Perfect 10, 508 F.3d at 1172 (internal quotations and citations omitted). The court of appeals held that “Google could be held contributorily liable if it had knowledge that infringing . . . images were available using its search engine, could take simple measures to prevent further damage to [plaintiff’s] copyrighted works, and failed to take such steps.” 29Id.

Putting it all together, I think Boffoli has a good chance of success on the merits of his claim. If he sent DMCA takedown notices to Twitter that complied substantially with the elements listed in the statute, then Twitter will have lost its innocence and will be deemed to have knowledge of the infringement (should there actually be any). Once knowledge is established, Twitter’s intent to cause the infringement will be imputed. And as to material contribution, Twitter is assisting and enabling its users to find the infringing content it provides on its system.

This is similar to the situation in Napster, where the Ninth Circuit held that Napster could be liable as a contributory infringer for failing to remove material it knew to be infringing. This is also similar to the circumstances in Perfect 10, where the Ninth Circuit held that Google could be liable as a contributory infringer for failing to remove links to infringing images once alerted to their presence. Here, Twitter is failing to remove both links and images.

That said, it’s kind of hard to understand why Twitter hasn’t removed the links and images Boffoli complained of. Perhaps there’s more going on here than meets the eye, but under the allegations in the complaint, it seems to me that Twitter could be contributorily liable for whatever infringement is taking place of Boffoli’s copyrighted images.

See 17 U.S.C.A. § 512(c)(1)(C) (West 2012) (“A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider– *** upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.”).

See, e.g., Costar Group Inc. v. Loopnet, Inc., 164 F.Supp.2d 688, 699 (D. Md. 2001) (“The existence of the safe harbor convolutes the analysis of copyright infringement which, theoretically, should proceed in a straight line. Ideally, CoStar would have to make a prima facie showing that LoopNet was liable of contributory infringement and then the court would turn to the question of whether the “safe harbor” provided a defense. However, because the parameters of the liability protection provided by the “safe harbor” are not contiguous with the bounds of liability for contributory infringement, the analysis may proceed more efficiently if issues are decided a bit out of order. On summary judgment, it is often appropriate for a court to decide issues out of the traditional order because a dispute of fact is only material if it can affect the outcome of a proceeding. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Thus, to the extent, if at all, that LoopNet is entitled to summary judgment in its safe harbor defense, all other issues concerning damages liability for contributory infringement would be rendered immaterial.”).

17 U.S.C.A. § 512(c)(3)(A) (West 2012) (“To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”).

Perfect 10, 494 F.3d at 795; it should be noted too that contributory infringement requires direct infringement to have occurred before liability attaches; see 1 Goldstein, Copyright: Principles, Law and Practice § 6.1, at 705 (1989) (“It is definitional that, for a defendant to be held contributorily . . . liable, a direct infringement must have occurred.”).

14.

↑

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (the Court held that “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”).

DeVoto v. Pac. Fid. Life Ins. Co., 618 F.2d 1340, 1347 (9th Cir. 1980); see also Restatement (Second) of Torts § 8A (1965) (“All consequences which the actor desires to bring about are intended, as the word is used in this Restatement. Intent is not, however, limited to consequences which are desired. If the actor knows that the consequences are certain, or substantially certain, to result from his act, and still goes ahead, he is treated by the law as if he had in fact desired to produce the result.”).

On Friday, the Eleventh Circuit affirmed a lower court’s decision that resolved the case in favor of Mosley. If you’re expecting a discussion of copyright and its intersection with the practice of digital sampling, you can stop reading now. The litigation here ended up being resolved on more dry matters.

I had previously written about Kernel Records Oy v Mosley, including the district court’s judgment in favor of Mosley and Kernel Record’s appeal. To reiterate, AcidJazzed Evening is a “chiptune” style track originally composed by Janne Suni. The track was remixed with permission by Norwegian Glenn Rune Gallefoss and first released via an Australian “disk magazine” in August 2002.

In 2006, pop artist Nelly Furtado released her album Loose. One of the tracks, “Do It”, produced by Mosley, was alleged to contain elements from the Gallefoss version of AcidJazzed Evening. Gallefoss subsequently transferred his rights to Kernel Records, and litigation ensued.

Kernel Records had not registered its copyright prior to bringing suit in the US. Mosley moved for summary judgment on this point, and in 2011, a Florida district court granted the motion, holding that AcidJazzed Evening was a “United States work” under the US Copyright Act and must be registered before bringing a copyright infringement suit. Kernel appealed.

Copyright Registration and Country of Origin

Since the first US Copyright Act, and for nearly 200 years afterward, creators were required to register their works to receive copyright protection. This requirement was done away with in the 1976 Copyright Act. Since then, copyright protection vests automatically once a work is put into fixed form — on paper, on tape, or saved to a digital file. The US, however, has retained a voluntary registration system that provides certain benefits to authors. One in particular is especially important to US authors: a US author cannot sue for infringement before registering her work. 117 USC § 411(a).

The move from mandatory to voluntary registration happened for several reasons, one of which was to bring US law into accordance with the Berne Convention, which the US entered in 1988. The Convention provides minimum standards of copyright protection for creators of member parties in other member parties. One of these standards is that “enjoyment and the exercise of these rights shall not be subject to any formality.” 2Article 5(2). Thus, under the Convention, the US may require registration before a lawsuit is filed for US authors, but not for foreign authors.

Since this registration requirement hinges on the distinction between a US work and a foreign work, things get tricky when a work is published at the same time in the US and a foreign country. What is the country of origin in that situation?

The Berne Convention provides that “The country of origin shall be considered to be: … in the case of works published simultaneously in several countries of the Union which grant different terms of protection, the country whose legislation grants the shortest term of protection” and “in the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country.” 3Article 5(4).

For purposes of section 411, a work is a “United States work” only if—

(1) in the case of a published work, the work is first published—

(A) in the United States;

(B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States;

(C) simultaneously in the United States and a foreign nation that is not a treaty party; or

(D) in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States

Since Kernel Records had not registered its copyright in the US before bringing suit, the Eleventh Circuit was tasked with determining, under this complex framework, whether the work at issue was a “United States work,” and thus not falling within the scope of the registration requirement.

What isn’t entirely clear from the language of either the Berne Convention or the US Copyright Act is what happens when a work falls into more than one category — when, for example, it is first published simultaneously in the US and another Berne Convention country and a non-Berne country. On appeal, Kernel argued that this is typical when a work is first published online, calling it “simultaneous worldwide publication.” Since the Copyright Act uses the disjunctive or, according to Kernel, any publication that falls in more than one category would be excluded from the definition of a “United States work.”

The Decision

The court begins with a recitation of the meaning of “publication” under the Copyright Act and then turns to an explanation of the analysis required for determining whether a work is first published in the US or abroad.

Determining whether a work was first published domestically or abroad adds an additional level of complexity. Because the statutory definition of “United States work” contains strict temporal and geographic requirements (e.g., “first,” “simultaneously,” “in the United States,” “foreign nation,” and “treaty party”), a determination that a work was first published abroad requires both: (1) an examination of the method, extent, and purpose of the alleged distribution to determine whether that distribution was sufficient for publication, and (2) an examination of both the timing and geographic extent of the first publication to determine whether the work was published abroad.

For example, a free pamphlet distributed by mail to every household on the continent of North America would undoubtedly meet the statutory definition of “publication.” However, to determine whether the very same pamphlet was first published abroad, the exact timing and geographic extent of the first publication must be known. Was the pamphlet first mailed to every household in Mexico, followed a week later by a separate mailing to the rest of the continent? If so, the pamphlet is a foreign work, first published abroad, and is not subject to the registration requirement. Or was the pamphlet first mailed to households in the United States and Mexico, followed a week later by a separate mailing to the rest of the continent? If so, the pamphlet was first published in the United States and a treaty party whose law grants a term of copyright protection longer than the United States, making the work a United States work that is subject to the registration requirement. Without evidence of the exact timing and geographic extent of first publication, it would be impossible to determine whether the pamphlet met the statutory definition of a “United States work,” or was instead a foreign work.

Applying this analysis to online publication, the court notes that care must be taken — the question still relies on a close look at the facts of a specific case rather than a blanket determination that online publication equals simultaneous worldwide publication.

Although “online” and “Internet” are largely synonymous terms, the Internet consists of distribution methods of significantly different types. Thus, an “online” activity may occur through public websites, restricted websites, peer-to-peer networks, e-mail, or other less common methods. Although it may be possible to presume simultaneous worldwide availability of a public website, such a presumption could not apply to restricted websites, peer-to-peer networks, and e-mail. A restricted website is only available to those willing to pay a fee or who meet specified criteria; a peer-to-peer network is only available to those who have downloaded the required software; and an e-mail only goes to the addresses input by the sender. Thus, unlike public websites on the World Wide Web, each of these other methods of online distribution would be inconsistent with a presumption of simultaneous worldwide availability.

To determine the countries to which these other online methods distribute material would require additional evidence, such as the country of residence of the users of a certain restricted website or peer-to-peer network, or the recipient of a certain e-mail.

The court ends its analysis there, however, since it has no need to go further based on the facts of this case.

It first denies Mosley’s motion for summary judgment because the parties disputed over first publication. Acidjazzed Evening first appeared in an Australian “disk magazine”, a point both parties agreed on. They disagreed, though, on whether this “disk magazine” was an offline or an online publication. Since this point is necessary to determine whether registration is required, and since courts can only grant summary judgment when there is no disputed material facts, the Eleventh Circuit denied Mosley’s motion.

The court nevertheless affirms the district court’s judgment because it found that Kernel Records failed to meet its burden of offering evidence that Acidjazzed Evening was published simultaneously worldwide. As it notes above, simultaneous worldwide publication might be possible when a work is published on the world wide web, but this depends on the facts, and here there was only speculation that the work was first made available on a website. The court concludes that, “A reasonable fact-finder could not find that a simultaneous, worldwide publication occurred in August 2002,” fatally dooming Kernel’s copyright claim since it had not met the Copyright Act’s registration requirements.

So the court punts on the issue of “simultaneous worldwide publication.” It states, “Because the record lacks sufficiently probative evidence of simultaneous worldwide publication, we need not determine what effect simultaneous worldwide publication would have under 17 U.S.C. § 101’s definition of a United States work.” That issue, then, remains unresolved.

As a result, Mosley essentially faces no more liability, and considering the narrow grounds that the Eleventh Circuit based its decision on, the success of any potential future appeal does not seem likely.

So this decision will be of interest primarily to copyright practitioners. As this case indicates, registering a copyright is important before initiating any infringement suit in the United States. The cost of registration is nominal compared to court fees and attorney costs, so the first step when contemplating an infringement lawsuit in the United States should be ensuring that the work is properly registered. 4Timely registration also allows for statutory damages and attorney fees. Here, the court noted without discussion that these remedies are only available to works that have been registered, regardless of the country of origin, consistent with other courts that have faced the issue. See, for example, Football Ass’n Premier League v. YouTube, 633 F. Supp. 2d 159 (SDNY 2009).

Timely registration also allows for statutory damages and attorney fees. Here, the court noted without discussion that these remedies are only available to works that have been registered, regardless of the country of origin, consistent with other courts that have faced the issue. See, for example, Football Ass’n Premier League v. YouTube, 633 F. Supp. 2d 159 (SDNY 2009).

Eroding the Pull of Piracy-A Bilateral Approach — Be sure to check out filmmaker Ellen Seidler’s newly launched blog, Vox Indie, featuring “commentary, memes & more from creative culture.” Here, Seidler notes recent news that offer “compelling evidence that ongoing efforts to fight online piracy should include a bilateral effort to alter consumer habits–via legal means (legislation) in tandem with the continued development of new business models.”

Streaming media could have larger carbon footprint than plastic discs — A provocative new report from Music Tank reveals the extent that information is not free. The report’s author notes, “Streaming or downloading 12 tracks, without compression, just 27 times by one user would, in energy terms, equate to the production and shipping of one physical 12-track CD album,” and “unlicensed file sharing could consume the equivalent of up to four times the annual combined electricity consumption of all UK households.”

Why Are Google DMCA Notices Skyrocketing? — Plagiarism Today’s Jonathan Bailey examines the reason that DMCA notices to Google have increased so rapidly within the past few months. Bailey notes it is not so much because the amount of notices have increased, but because the search giant has relaxed previous throttles on the amount of notices allowed and begun working through its backlog — a backlog that explains why, as has been reported, some recent notices have targeted content that has already been removed.

Emmy-Nominated TV Shows Hit Home — The Primetime Emmy Awards are next Sunday, the 23rd. CreativeAmerica takes a look at some of the nominated shows and their contributions to state jobs and economies.

Warner Bros. eyes the future through its ‘tech ops’ — Fascinating profile of Warner Bros. “tech lab” at its Burbank studio. The LA Times says, “This might be a sneak peek at the future of the modern studio, where the digitization of delivery systems and the power of social media mean that making great movies and television shows is no longer enough to succeed. The new studio needs to manage complex processes as efficiently as Google and reach consumers as aggressively as Apple.”

Blood to Rain, in a Bag of Tricks— Take an inside look at the world of theatrical props in this NY Times profile of an informal gathering of prop professionals last week. “‘It’s kind of the stepchild of theater,’ said Faye Armon, a properties coordinator who works often at Lincoln Center Theater. Theatergoers probably understand what costume, set and lighting designers do. Their work can be eye-catching, and their names appear on a program’s main credit page. They get their own Tony Award category. But a props master?”

How Kansas City taxpayers support Google Fiber — Ars Technica reports that “Google Fiber isn’t exactly a free-market success story.” As they point out, former FCC official Fred Campbell says, “Google received stunning regulatory concessions and incentives from local governments, including free access to virtually everything the city owns or controls: rights of way, central office space, power, interconnections with anchor institutions, marketing and direct mail, and office space for Google employees. City officials also expedited the permitting process and assigned staff specifically to help Google. One county even offered to allow Google to hang its wires on parts of utility poles—for free—that are usually off-limits to communications companies.”

ACTA: Will It Ever Become A Valid International Treaty? — IP Watch provides an update on the Anti-counterfeiting Trade Agreement. The multilateral agreement has run into some opposition. It needs ratification from six member parties to go into effect; currently it has been signed (but not ratified) by seven nations.

Assessing the Academic Literature Regarding the Impact of Media Piracy on Sales — Though filesharing denialists will likely ignore this, a new report shows that piracy’s effects on media sales is very real. The authors note, “Based on our review of the empirical literature we conclude that, while some papers in the literature find no evidence of harm, the vast majority of the literature (particularly the literature published in top peer reviewed journals) finds evidence that piracy harms media sales.”

Less than three weeks after a Massachusetts district court held that the jury award in the Sony v. Tenenbaum filesharing case did not violate the constitution, the Eighth Circuit has come to the same conclusion in Capitol v. Thomas-Rasset.

In a decision yesterday, the federal appeals court upheld the jury award from Thomas-Rasset’s first trial — $222,000 in statutory damages — and “a broadened injunction that forbids Thomas-Rasset to make available sound recordings for distribution.”

The court details the long, winding road this case has travelled, but to sum up: In 2007, a jury awarded damages of $222,000 against Thomas-Rasset for willful infringement of 24 songs on Kazaa. Several months later, the court, on its own, raised the issue of whether it erred when it instructed the jury that “making available” a work online is sufficient to show distribution, or whether evidence of actual distribution to another peer must be shown. After a hearing, the court granted a new trial, this time resulting in a jury verdict of $1,920,000 against Thomas-Rasset. The judge remitted the jury award to $54,000. The record labels rejected the remitted award, 1Generally speaking, the Seventh Amendment requires that plaintiffs are given the option of either accepting a remitted award or rejecting it and having a new trial on damages, though there are some who argue that remittitur itself is unconstitutional; see, for example, Suja A. Thomas, Re-Examining the Constitutionality of Remittitur Under the Seventh Amendment, 64 Ohio State Law Journal 731 (2003). and a third trial, solely on the amount of damages, was held November 2010. The jury reached a verdict of $1,500,000 against Thomas-Rasset, and this time, the judge subsequently reduced the award to $54,000 on constitutional grounds. Both parties appealed, which is how we got here.

Making Available

The interesting twist here is that the record labels sought to have the first award reinstated, even though it was significantly lower than the most recent verdict. The labels proceeded this way in an attempt to have the Eighth Circuit reverse the district court’s ruling on the “making available” issue.

The problem for plaintiffs is that it is difficult, perhaps impossible, to prove directly that a particular p2p user actually disseminated a particular file to a specific other user. Plaintiffs argue that to prove distribution, it is sufficient to show that the defendant had the files in her “shared” folder, thus making those files available to all other users of the p2p network. There are at least two ways to think about the making available theory: either making the file available in itself counts as distribution, or it is a factual scenario that presents sufficient circumstantial evidence from which a jury can infer that actual dissemination, and thus distribution, occurred.

But while the Eighth Circuit here reinstated the verdict from the first trial, it declined to review the “making available” issue, noting that “this court reviews judgments, not decisions on issues.” The court explained:

That the companies seek these remedies with the objective of securing a ruling on a particular legal issue does not make that legal issue itself the matter in controversy. Once the requested remedies are ordered, the desire of the companies for an opinion on the meaning of the Copyright Act, or for a statement that Thomas-Rasset violated the law by making works available, is not sufficient to maintain an Article III case or controversy.

The Constitution and Statutory Damages

The critical import of this case, as with Tenenbaum, was how to review the damages award. Both parties here disagreed over the proper standard to review the jury award regarding its constitutionality. The lower court, and Thomas-Rasset, argued that the award should be reviewed under the standard developed by the Supreme Court to examine punitive damages, while the record labels, and the United States (acting as intervenor because the constitutionality of a federal statute was at issue), argued that statutory damage awards should be reviewed under the deferential standard from St. Louis v. Williams. 3For more on the different standards, see my previous posts on the subject: Capitol v. Thomas-Rasset Verdict Unconstitutional, Oh Tenenbaum, and Sony BMG v Tenenbaum: District Court Erred in Reducing Jury Verdict.

The court here sided squarely with the record labels:

Due process prohibits excessive punitive damages because “‘[e]lementary notions of fairness enshrined in our constitutional jurisprudence dictate that a person receive fair notice not only of the conduct that will subject him to punishment, but also of the severity of the penalty that a State may impose.’” This concern about fair notice does not apply to statutory damages, because those damages are identified and constrained by the authorizing statute. The guideposts themselves, moreover, would be nonsensical if applied to statutory damages. It makes no sense to consider the disparity between “actual harm” and an award of statutory damages when statutory damages are designed precisely for instances where actual harm is difficult or impossible to calculate. Nor could a reviewing court consider the difference between an award of statutory damages and the “civil penalties authorized,” because statutory damages are the civil penalties authorized.

And, applying the Williams standard, the court held that the jury verdict was not unconstitutional.

The Eighth Circuit goes on to say that its conclusion supports the policies of copyright law:

Congress’s protection of copyrights is not a “special private benefit,” but is meant to achieve an important public interest: “to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.”

Statutory damages play a role in advancing this public interest:

Because the damages award “is imposed as a punishment for the violation of a public law, the Legislature may adjust its amount to the public wrong rather than the private injury, just as if it were going to the state.” The protection of copyrights is a vindication of the public interest, and statutory damages are “by definition a substitute for unproven or unprovable actual damages.” For copyright infringement, moreover, statutory damages are “designed to discourage wrongful conduct,” in addition to providing “restitution of profit and reparation for injury.”

The court ends by wrapping up several loose ends, including Thomas-Rasset’s assertion that had the record labels sued for the actual number of files she copied and distributed, the potential damages award would have been astronomical. The court notes it’s a fair point, but hypothetical, and thus not relevant:

If they had sued over 1,000 recordings, then a finder of fact may well have considered the number of recordings and the proportionality of the total award as factors in determining where within the range to assess the statutory damages. If and when a jury returns a multi-million dollar award for noncommercial online copyright infringement, then there will be time enough to consider it.

What’s Next?

This is likely the end of the road for Thomas-Rasset. Though her attorneys have indicated that they will appeal the ruling to the Supreme Court, the odds of the Court granting cert are against them. The Court has already denied an appeal from Tenenbaum, and since this decision is consistent with the Tenenbaum case, there is less of a reason for the Supreme Court to weigh in. So barring the unlikely, it would appear that the record label’s campaign of suing individual filesharers — starting September 2003 and ending December 2008 — has drawn to a close. The RIAA itself, which coordinated the record labels’ lawsuit here, stated that it is looking “forward to putting this case behind us.”

Generally speaking, the Seventh Amendment requires that plaintiffs are given the option of either accepting a remitted award or rejecting it and having a new trial on damages, though there are some who argue that remittitur itself is unconstitutional; see, for example, Suja A. Thomas, Re-Examining the Constitutionality of Remittitur Under the Seventh Amendment, 64 Ohio State Law Journal 731 (2003).

Last week, France’s HADOPI released a report of figures from its first 20 months of operation.

HADOPI, if you recall, is both the French law implementing a graduated response, or “three strikes”, approach to mitigating online infringement, and the agency created to administer the law. Internet users who download an infringing work are first sent a warning email by the agency. If the user’s ISP notes a second infringement within six months of the first, a certified letter is sent to the user. A third infraction within a year of the second warning results in additional measures — including termination of internet access for up to a year, though court review is required before any such measures can be taken.

One thing revealed from the HADOPI report is that there has been an unofficial “fourth strike” added by practice: only users who infringe after a third warning are referred to a court for further measures.

Since it began operations, HADOPI has identified 3 million IP addresses connected with downloading infringing works. Of those, it sent out 1.15 million initial warnings. 102,854 users received a second warning. Of these, 340 received a third warning. Thirty of these cases resulted in repeated infringement after a third warning and were reviewed by a commission within HADOPI, though only 14 of those 30 have been referred to a court for judicial review.

In other words, from first identification, only .00047% French internet users face punitive measures for repeated infringement. These numbers are consistent with the program’s goal of educating internet users about the harms of copyright infringement — and turning them toward legal options — rather than punishing users.

What’s interesting here, however, is how substantially the picture that emerges from these figures differs from the apocalypse predicted by copyright skeptics when the law was first introduced.

The EFF, no stranger to hyperbole, described the HADOPI agency as an “executioner” and the law like a “guilliotine.” It warned of other country’s following France’s lead and “pressuring ISPs to throw their customers offline.” Even as recently as a month ago, the organization continued to call it “ham-fisted,” saying the process “runs contrary to principles of due process, innovation, and free expression.”

This type of rhetoric is all too common from copyright skeptics whenever any effort is made to protect creators’ rights. One could call this “copyright hypochondria,” where every minor change in copyright law or enforcement is surely a symptom of a life-threatening disease. Far more often, it’s not, as this story demonstrates.

HADOPI’s numbers show that, contrary to the claims of copyright skeptics, the law did not threaten “vast swathes” of French internet users with punitive measures based solely on accusations. Instead, it seems to have achieved its purpose of educating users. Only about 38% of the IP addresses identified in connection with unauthorized downloading actually received an email warning. Of those, less than nine percent continued to infringe. And the bottom line is that only fourteen users in twenty months face actual penalties for continuing to infringe despite repeated warnings — less than one for each month of operation.

Also contrary to warnings that the process would surely lack due process or rely on naked allegations of infringement, the numbers suggest strong protections. While thirty users reached the unofficial fourth strike, HADOPI only recommended less than half to a court for further action.

So far, it appears to be the case that HADOPI has reduced piracy in a fair manner, but is it effective? Early studies suggest it is. A 2012 study by researchers, including professor of economics Brett Danaher, noted that consumer awareness of HADOPI has increased iTunes sales in France by over 22%. And a report by HADOPI itself after 17 months of operation showed that the clear decline in online piracy coincided with a rise in quality and quantity of legal cultural offerings.

In the US, a voluntary agreement between ISPs and major content producers that takes a graduated response approach is set to commence within the coming months. Like HADOPI, the process involves a series of escalating warnings to internet users who engage in unauthorized downloading. Unlike HADOPI, the process involves as many as six “steps”, and, while it provides for mitigation measures after the fifth or sixth steps, there is less of an emphasis on temporary termination of internet access. If HADOPI’s experience is any indication, the Copyright Alert System should do a good job in helping reduce online piracy and guiding internet users to legal options.

In Honor of Labor Day — This past Monday was Labor Day in the US. Check out CreativeAmerica’s interactive map that shows the jobs and economic contributions made by the film and television industry in each state.

No, Bruce Willis isn’t suing Apple over iTunes rights (H/T IPKat) — Earlier this week, there was a flurry of news stories that actor Bruce Willis was considering taking legal action against Apple over whether he can pass on his digital music collection to his kids when he passes away. While it raises interesting contractual issues that we’ll likely see more and more of, it turns out that this particular story is more fiction than fact. Meanwhile, Jeff John Roberts at GigaOM looks at 3 ways to deal with digital media when you die.

Pirate Bay Founder Arrest Related To Tax Hack, Not Piracy — Also earlier this week, Pirate Bay cofounder Gottfrid Svartholm was arrested in Cambodia at the request of Swedish authorities. Many assumed the arrest was in connection with his role in the Pirate Bay, which earned him a one year sentence. Svartholm left the country before a 2010 appeal affirmed the conviction but reduced the prison term. Torrentfreak reports, however, that the arrest is in connection with Svartholm’s alleged role in a hacking operation that published the tax numbers of thousands of Swedes online. Because, well, information wants to be free.

Meet the man who wants to satirize Silicon Valley — “British arch-satirist Armando Iannucci – best known for his documentary-style dissections of the political classes — is getting ready to take on his next project: a black comedy based on Silicon Valley’s worst moments of excess. Fish, meet barrel.”

About

Copyhype provides news and info on current developments relating to copyright law, the media industries, and the digital economy. It cuts through the hype to bring reasoned discussion aimed at both legal and nonlegal audiences.

Terry Hart is currently VP Legal Policy and Copyright Counsel at the Copyright Alliance. Any opinions expressed on this site remain his own and not necessarily those of his present or any past employers.